patent
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Standing is a Lot Easier for Copyrights
I’m curious about the different legal standards that the courts apply in patent versus copyright cases when deciding whether a plaintiff who acquired the rights through transfer has standing. Patent law seems draconian, as exemplified by Abraxis Bioscience, Inc. v. Navinta, LLC. In Abraxis (blogged here and here), standing for a patent infringement suit was… Continue reading
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Why Can’t More Decisions Be This Short?
Short and to the point from the Federal Circuit: a reversion of the assignment of a patent as a remedy for a breach of contract claim does not give the Court of Appeals for the Federal Circuit jurisdiction to hear the appeal. Appeal transferred to the Fourth Circuit. Patently-O gives you the details here. The… Continue reading
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Questionable Decision on Assigning an ITU
I recently wrote about a case which held that, while there was an assignment of an invention, a continuation-in-part application was not assigned because it had new matter. I’m not sure if the outcome was right; at least I suspect that many drafters of assignment language haven’t thought about it that way. The same decision… Continue reading
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Who Owns the Shop Right?
The decision in Ultimax Cement Manufacturing Corp. v. CTS Cement Manufacturing Corp. begins “After a four-week trial in this decade-old patent infringement case, the jury was unable to reach a verdict.” Imagine how deflated the parties and their lawyers were. But the court was able to sort things out on the parties’ renewed motions for… Continue reading
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“Co-owned” Means Owned by the Same Entity
Short and sweet: The parties agree with binding Federal Circuit precedent that holds that if the ownership of a disclaimed patent is separated from the prior patent, the disclaimed patent is not enforceable. Further, the parties do not dispute that, according to the condition set forth in the Terminal Disclaimer, the ‘176 Patent is enforceable… Continue reading
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Assignment of a Part of a Continuation-in-Part?
Plaintiff AB Coaster Holdings Inc. claimed to be the owner of patents that were subject to terminal disclaimers. Some of the patents were expressly assigned and some were not. Here are the pairings: ‘633 (assigned) and ‘079 (not expressly assigned)‘445 (not expressly assigned) and ‘263 (assigned)‘079 (not expressly assigned) and ‘263 (assigned) The defendant argued… Continue reading
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Unexciting Patent Ownership Decision
No one else seems to have reported much on this case, which is understandable – there’s not really any new ground covered. But it is a Federal Circuit decision, so I’ll give you a brief summary. Yale Preston was an employee of Marathon Oil Co. A few days after his employment began, at the same… Continue reading
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Don’t Get Greedy
Tahir Mahmood believed that he was a co-inventor of a RIM patent. He hadn’t worked for RIM, but it was undisputed that in 1995 he provided information to RIM about his own PageMail technology. In 1998 RIM filed a patent application for the patent that in 2001 ultimately matured into U.S. Patent No. 6,219,694. In… Continue reading
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I Learned What “Dubitante” Means
For purposes of patent standing, there are generally three categories of ownership described: patent owner, exclusive licensee, and non-exclusive licensee. The first has the right to sue, an exclusive licensee must join the assignee in any patent infringement suit, and the non-exclusive licensee has no standing at all. But the first category can be subdivided.… Continue reading
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The Missing Inventor
I love cases where the defendant goes back and finds another potential inventor. Stemcells, Inc. v. Neuralstem, Inc. shows some of the ways this can play out – in this case, standing, and the rarely-invoked bona fide purchaser in good faith defense. The patents in dispute are 7,115,418entitled “Methods of proliferating undifferentiated neural cells” and… Continue reading
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